USPTO may invalidate another of Apple’s key multitouch patents

First office action isn't final but could affect lawsuit outcomes.

The United States Patent and Trademark Office has issued a first Office action declaring all twenty claims of one of Apple's key multitouch patents invalid. The decision that was filed Monday isn't final, but Apple will have its work cut out for it in order to overturn the initial ruling before it's set in stone.

US Patent #7,479,949, claiming a "[t]ouch screen device, method, and graphical user interface for determining commands by applying heuristics," essentially covers iOS's ability to respond when a user is trying to scroll vertically in a document, or trying to move around within the document in multiple directions. It also covers iOS's ability to discern the difference between swiping among images in a gallery, or panning or zooming within the image.

The patent is sometimes referred to as the "Steve Jobs patent," as Jobs' name is listed first among the many Apple engineers cited as inventors of the patented claims.

Apple has asserted the '949 patent in several venues, particularly in federal court against HTC and Motorola, and at the International Trade Commission against Samsung. Apple and HTC settled the 50 separate lawsuits pending between the two companies, reaching a highly publicized agreement to cross-license certain technologies. Judge Richard Posner ruled several of its claims invalid, but eventually tossed the suit between Apple and Motorola before it ever reached trail.

However, a judge at the ITC has initially ruled that the patent in question is valid and that Samsung (in separate litigation with Apple) infringed its claims. The final ruling in that case could come as soon as February.

A first Office action from the USPTO is usually just the first step of many in the process of re-examining a patent. However, as FOSS Patents noted, the fact that all 20 of the claims were rejected on an initial basis means that Apple will have to make a very convincing case to the USPTO that the patent should not be revoked.

The USPTO recently issued a first Office action invalidating another important Apple multitouch patent which covers iOS's "rubber banding" effect. You see this effect when you try to move past the edge of a document, image, or list; you can pull past the edge, but then it "bounces" back into place when you stop. A jury ruled that Samsung infringed this patent in 18 devices that were part of the Apple v. Samsung trial.

I suspect its because you're confusing the International Trade Commission (a body responsible for regulating international trade with the US) with the US Patent Office (a body responsible for determining the validity of patent applications).

The ITC presumed the patent was valid, but if the patent office rescinds it, then it trumps anything the ITC assumes (since they are not the patent office).

Bwah ha ha ha ha ha ha ha ha ... I LOVE IT! Pretty hard for CrApple to have "patented" one-touch in 2007 when Gateway had a true Tablet with a Touch Screen that did "One Touch" input on a special version of Windows XP Tablet in 2002!! It's called PRIOR ART AND USE. YOU LOSE CrApple! - Gateway M275 Tablet, look it up reviewed in 2002 and 2003.

Things are looking up. It appears that elsewhere Motorola and Samsung are getting reigned in on their abuse of FRAND/SEP patents and now Apple (and hopefully everyone else) is beginning to loose leverage with their "obvious"/"prior-art" tainted patents. Hopefully this is the start of some sort of more sane period of IP law... but I wont hold my breath.

Glad the USPTO is getting around to some cleanup ops during the slow holidays. Hopefully we'll see more healthy competition in the mobile space due to this (rather than the status quo of competition through litigation).

Most of the criticism that apples patents were bogus on this site were mostly from the feeling they should be. If the patent office invalidated they did so for a factual reason. Which is more than anyone here has offered in the last 2 years.

Whats makes you think the USPTO is using any more scientific reasoning than, "Hey, this seems really broad and/or obvious"? I mean, maybe there is a method, but thats not clear at this point.

Most of the criticism that apples patents were bogus on this site were mostly from the feeling they should be. If the patent office invalidated they did so for a factual reason. Which is more than anyone here has offered in the last 2 years.

*confused* if you actually believe that, why are you reading these articles & comments?

On topic:Would this have any material bearing on the $1B+ verdict between Samsung and Apple, or is this more of a parallel-but-not-directly-affecting situation?

Personally I'd consider this to be just one more step in the direction of tangible patent reform, sadly these are steps leading toward a whole soup of intelligibility in the patent & legal scene before we can get anything cogent from the legal morass.

I will be glad if these patents are invalidated, because I don't think software should be patentable.

However, I also think that the patent office should be held financially liable for screwing up in the first place. The modus operandi of "rubber stamp first, make correct determination later" is really unacceptable.

When the patent office issues a patent, then the patent holder has every reason to make good faith efforts to enforce the patent. If the patent office then comes and pulls the rug out from under the patent holder, then the patent office ought to reimburse the (ex-)patent holder for the expenses incurred in the attempted enforcement.

The only way I can see that the patent office should get a pass would be if it could be shown that the patent office had originally thoroughly considered all the requirements for patentability: prior art, obviousness, etc. and determined that there were no such factors hindering the granting of the patent, but then later new information came to light. In other words, if the initial grant was well considered but erroneous, and not just a rubber stamping of the application in a rush to fulfill some insane patent-granting quota.

If you get sued for infringing a patent and lose is there any redress if the patent is later invalidated?

/IANAL

I would expect that there would be recourse. If you enter into a private arrangement, though, as HTC did with Apple, unless that agreement specifically refers to invalidation of patents then bad luck - you pays your money and takes your chances.

Nah, theres millenia of prior art for self-obsessed charismatic cult leaders, even if it WAS patentable.Then again, with the USPTO the way it is, you could prob add "on a phone/tablet" in lawyerese and get it thru...

Our patent process is severely screwed up. Companies have spent millions in courts over this and now they "ooops, we need to take another look at it." years laters.

I don't disagree but this a strange time to make that point when the USPTO is actually doing its job for once.

So Bob manages to show up to work sober one week out of the year and he gets amnesty from criticism? I don't see what's strange about pointing out that the USPTO's inefficiencies are costing companies and consumers billions of dollars in extravagant lawsuits focused on ultimately invalid patents. What a tragic waste of time, productivity and economic growth!